Appeal No. 96-2322 6
Application No. 08/112,478
disclosed as requisite steps in Nemec’s process. See column 2, lines 60-63 and Examples
1, 2, and 5 to 8.
Finally, the examiner relies on USSR ‘808 as teaching that alcohol is produced as
a by-product of reacting dimethyl maleate with monoethanol amine. See Answer, page 4
and USSR ‘808, page 1. The reference however, is neither directed to an oxamide, nor
utilizes ammonia in the reaction process.
Based upon the above considerations, even if the examiner was correct in
combining Yamazaki, Nemec and USSR ‘808 in the manner described in the Answer, the
omission by the prior art of maintaining the content of the aliphatic alcohol at a level of 5
to 40% by weight as required by the claimed subject matter and the presence of a
filtration process required by each of the references of record would result in a process
that falls short of the invention defined by the claimed subject matter. Stated otherwise,
the aforesaid claimed subject matter requires features that cannot be achieved by
combining the three references. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Accordingly, the examiner has not established a prima facie case of obviousness.
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